AMOS L. MAZZANT, III, District Judge.
This Memorandum Opinion and Order construes the disputed terms in United States Patents No. 6,271,884 ("'884 Patent"), 6,836,290 ("'290 Patent"), and 7,092,029 ("'029 Patent"). Claim construction arguments were submitted in Plaintiff Imperium IP Holdings (Cayman), Ltd.'s ("Plaintiff's") Opening Claim Construction Brief (Dkt. #87), Defendants Samsung Electronics Co., Ltd.'s, Samsung Electronics America, Inc.'s, and Samsung Semiconductor, Inc.'s ("Defendants'") Responsive Claim Construction Brief (Dkt. #91), Plaintiff's Claim Construction Reply Brief (Dkt. #96), and Defendants' Sur-Reply Claim Construction Brief (Dkt. #98). Also before the Court are the Parties' April 13, 2015 Joint Claim Construction and Prehearing Statement (Dkt. #86) ("Prehearing Statement") and the Parties' May 27, 2015 Joint Claim Construction Chart (Dkt. #99).
The Court conducted a claim construction hearing on June 10, 2015, and the Court hereby incorporates-by-reference the claim construction hearing transcript as well as the demonstrative slides presented by the Parties during the hearing (Dkt. #103; Dkt. #104). For the following reasons, the Court provides the constructions set forth below.
Plaintiff brings suit alleging infringement of United States Patents No. 6,271,884, 6,836,290, and 7,092,029 (collectively, the "patents-in-suit"). In general, the patents-in-suit relate to digital cameras and the sensor arrays used therein. A sensor array typically includes an array of pixels, and each pixel typically includes a photodiode. Light that strikes a photodiode generates a charge that is then "read out." An analog-to-digital converter ("A/D converter" or "ADC") receives the "read outs" of the light intensity at each pixel in the form of an analog signal. The A/D converter uses the analog signal to generate digital information from which a microprocessor can construct a digital image.
The three patents-in-suit are addressed separately, below. Of note, the Court has previously construed terms in the '884 Patent in Imperium (IP) Holdings, Inc. v. Apple Inc., et al., No. 4:11-CV-163 ("Imperium I"), Dkt. #209 (E.D. Tex. July 2, 2012). In that case, the Court also denied a motion for summary judgment of indefiniteness as to the '884 Patent. See id., Dkt. #210 at 2-6. After further proceedings, the Court modified its construction of "adjusting the overall system gain by adjusting the integration time," discussed below. See id., Dkt. #401 at 3-5.
Claim construction is a matter of law. Markman v. Westview Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir. 1995). The purpose of claim construction is to resolve the meanings and technical scope of claim terms. U.S. Surgical Corp. v. Ethicon, Inc., 103 F.3d 1554, 1568 (Fed. Cir. 1997). When the parties dispute the scope of a claim term, "it is the court's duty to resolve it." O2 Micro Int'l Ltd. v. Beyond Innovation Tech. Co., 521 F.3d 1351, 1362 (Fed. Cir. 2008).
"It is a `bedrock principle' of patent law that `the claims of a patent define the invention to which the patentee is entitled the right to exclude.'" Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (quoting Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d 1111, 1115 (Fed. Cir. 2004)). The Court examines a patent's intrinsic evidence to define the patented invention's scope. Id. at 1313-14; Bell Atl. Network Servs., Inc. v. Covad Commc'ns Group, Inc., 262 F.3d 1258, 1267 (Fed. Cir. 2001). Intrinsic evidence includes the claims, the rest of the specification, and the prosecution history. See, Phillips, 415 F.3d at 1312-13; Bell Atl. Network Servs., 262 F.3d at 1267. The Court gives claim terms their ordinary and customary meaning as understood by one of ordinary skill in the art at the time of the invention. Phillips, 415 F.3d at 1312-13; Alloc, Inc. v. Int'l Trade Comm'n, 342 F.3d 1361, 1368 (Fed. Cir. 2003).
Claim language guides the Court's construction of claim terms. Phillips, 415 F.3d at 1314. "[T]he context in which a term is used in the asserted claim can be highly instructive." Id. Other claims, asserted and unasserted, can provide additional instruction because "terms are normally used consistently throughout the patent." Id. Differences among claims, such as additional limitations in dependent claims, can provide further guidance. Id.
"[C]laims `must be read in view of the specification, of which they are a part.'" Id. at 1315 (quoting Markman, 52 F.3d at 979). "[T]he specification `is always highly relevant to the claim construction analysis. Usually, it is dispositive; it is the single best guide to the meaning of a disputed term.'" Id. (quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)); Teleflex. Inc. v. Ficosa N. Am. Corp., 299 F.3d 1313, 1325 (Fed. Cir. 2002). In the specification, a patentee may define his own terms, give a claim term a different meaning than it would otherwise possess, or disclaim or disavow some claim scope. Phillips, 415 F.3d at 1316. Although the Court generally presumes terms possess their ordinary meaning, this presumption can be overcome by statements of clear disclaimer. See SciMed Life Sys., Inc. v. Advanced Cardiovascular Sys., Inc., 242 F.3d 1337, 1343-44 (Fed. Cir. 2001). This presumption does not arise when the patentee acts as his own lexicographer. See Irdeto Access, Inc. v. EchoStar Satellite Corp., 383 F.3d 1295, 1301 (Fed. Cir. 2004).
The specification may also resolve ambiguous claim terms "where the ordinary and accustomed meaning of the words used in the claims lack sufficient clarity to permit the scope of the claim to be ascertained from the words alone." Teleflex, 299 F.3d at 1325. For example, "[a] claim interpretation that excludes a preferred embodiment from the scope of the claim `is rarely, if ever, correct.'" Globetrotter Software, Inc. v. Elam Computer Group Inc., 362 F.3d 1367, 1381 (Fed. Cir. 2004) (quoting Vitronics, 90 F.3d at 1583). But, "[a]lthough the specification may aid the court in interpreting the meaning of disputed language in the claims, particular embodiments and examples appearing in the specification will not generally be read into the claims." Constant v. Advanced Micro-Devices, Inc., 848 F.2d 1560, 1571 (Fed. Cir. 1988); accord Phillips, 415 F.3d at 1323.
The prosecution history is another tool to supply the proper context for claim construction because a patentee may define a term during prosecution of the patent. Home Diagnostics Inc. v. LifeScan, Inc., 381 F.3d 1352, 1356 (Fed. Cir. 2004) ("As in the case of the specification, a patent applicant may define a term in prosecuting a patent"). The wellestablished doctrine of prosecution disclaimer "preclud[es] patentees from recapturing through claim interpretation specific meanings disclaimed during prosecution." Omega Eng'g Inc. v. Raytek Corp., 334 F.3d 1314, 1323 (Fed. Cir. 2003). "Indeed, by distinguishing the claimed invention over the prior art, an applicant is indicating what the claims do not cover." Spectrum Int'l v. Sterilite Corp., 164 F.3d 1372, 1378-79 (Fed. Cir. 1988) (quotation omitted). "As a basic principle of claim interpretation, prosecution disclaimer promotes the public notice function of the intrinsic evidence and protects the public's reliance on definitive statements made during prosecution." Omega Eng'g, 334 F.3d at 1324. However, the prosecution history must show that the patentee clearly and unambiguously disclaimed or disavowed the proposed interpretation during prosecution to obtain claim allowance. Middleton Inc. v. 3M Co., 311 F.3d 1384, 1388 (Fed. Cir. 2002). Statements will constitute disclaimer of scope only if they are "clear and unmistakable statements of disavowal." See Cordis Corp. v. Medtronic Ave, Inc., 339 F.3d 1352, 1358 (Fed. Cir. 2003). An "ambiguous disavowal" will not suffice. Schindler Elevator Corp. v. Otis Elevator Co., 593 F.3d 1275, 1285 (Fed. Cir. 2010) (citation omitted).
Although "less significant than the intrinsic record in determining the legally operative meaning of claim language," the Court may rely on extrinsic evidence to "shed useful light on the relevant art." Phillips, 415 F.3d at 1317 (quotation omitted). Technical dictionaries and treatises may help the Court understand the underlying technology and the manner in which one skilled in the art might use claim terms, but such sources may also provide overly broad definitions or may not be indicative of how terms are used in the patent. Id. at 1318. Similarly, expert testimony may aid the Court in determining the particular meaning of a term in the pertinent field, but "conclusory, unsupported assertions by experts as to the definition of a claim term are not useful." Id. Generally, extrinsic evidence is "less reliable than the patent and its prosecution history in determining how to read claim terms." Id.
Patent claims must particularly point out and distinctly claim the subject matter regarded as the invention. 35 U.S.C. § 112(b). This "require[s] that a patent's claims, viewed in light of the specification and prosecution history, inform those skilled in the art about the scope of the invention with reasonable certainty." Nautilus, Inc. v. Biosig Instruments, Inc., 134 S.Ct. 2120, 2129 (2014); see Biosig Instruments, Inc. v. Nautilus, Inc., 783 F.3d 1374, 1377 (Fed. Cir. 2015). Whether a claim meets this definiteness requirement is a matter of law. Young v. Lumenis, Inc., 492 F.3d 1336, 1344 (Fed. Cir. 2007). A party challenging the definiteness of a claim must show it is invalid by clear and convincing evidence. Id. at 1345.
In general, prior claim construction proceedings involving the same patents-in-suit are "entitled to reasoned deference under the broad principals of stare decisis and the goals articulated by the Supreme Court in Markman, even though stare decisis may not be applicable per se." Maurice Mitchell Innovations, LP v. Intel Corp., No. 2:04-CV-450, 2006 WL 1751779, at *4 (E.D. Tex. June 21, 2006) (Davis, J.); see Teva Pharm. USA, Inc. v. Sandoz, Inc., 135 S.Ct. 831, 839-40 (2015) ("prior cases will sometimes be binding because of issue preclusion and sometimes will serve as persuasive authority") (citation omitted).
The Court nonetheless conducts an independent evaluation during claim construction proceedings. See, e.g., Texas Instruments, Inc. v. Linear Techs. Corp., 182 F.Supp.2d 580, 589-90 (E.D. Tex. 2002); Burns, Morris & Stewart Ltd. P'ship v. Masonite Int'l Corp., 401 F.Supp.2d 692, 697 (E.D. Tex. 2005); Negotiated Data Solutions, Inc. v. Apple, Inc., No. 2:11-CV-390, 2012 WL 6494240, at *5 (E.D. Tex. Dec. 13, 2012).
The '290 Patent, titled "Combined Single-Ended and Differential Signaling Interface," issued on December 28, 2004, and bears an earliest priority date of April 17, 1998. Plaintiff submits:
Opening (Dkt. #87) at 2-3 (footnotes omitted).
The Abstract of the '290 Patent states:
The parties have agreed that, in the '290 Patent, "differential interface" means "an interface that uses two lines to communicate a signal." Prehearing Statement (Dkt. #86) at 2.
Opening (Dkt. #87) at 7; Response (Dkt. #91) at 4. The parties submit that this term appears in Claims 1 and 10. See Prehearing Statement (Dkt. #86), Ex. B at 1.
Plaintiff argued that Defendants' proposed construction "reads limitations from the specification into the claims and attempts to limit the claims to the patent's disclosed embodiments." Opening (Dkt. #87) at 6.
Defendants responded that although "[t]he parties agree that a single-ended interface is an interface that communicates a signal using a single line," Plaintiff fails to acknowledge that "the signal is referenced to ground." Response (Dkt. #91) at 4. Defendants submitted that "[Plaintiff] does not point to any evidence establishing that grounding is unnecessary for a single-ended interface," and "the intrinsic and extrinsic evidence are consistent and confirm that `single-ended interface' is a technical term of art that requires a single line with a voltage referenced to ground." Id. at 5.
Plaintiff replied that as to the embodiments of Figures 2 and 5, cited by Defendants, "the patent explicitly states that these embodiments are not limiting." Reply (Dkt. #96) at 2. Plaintiff also argued that "the dictionaries on which [Defendants] rel[y] do not represent the only meaning of a single-ended interface." Id. at 3.
In sur-reply, Defendants submit: "While [Defendants] believe[ ] that its construction is technically more accurate, [Defendants] do[ ] not believe there are any issues in the litigation that will turn on whether the Court adopts [Defendants'] construction or [Plaintiff's]. Accordingly, to narrow the issues for the Court, [Defendants] will agree to [Plaintiff's] construction." Sur-Reply (Dkt. #98) at 1. At the June 10, 2015 hearing, the parties confirmed that this term is no longer in dispute.
Thus, as now agreed upon by the parties, the Court hereby construes
Opening (Dkt. #87) at 8; Response (Dkt. #91) at 5. The parties submit that this term appears in Claims 1 and 10. See Prehearing Statement (Dkt. #86), Ex. B at 2.
Plaintiff submits that "single-ended interface" is being addressed separately (above), that the parties have agreed upon a construction for "differential interface" (as noted above), that "there is no dispute over the meaning of the common word `selectable,'" and that the remaining words are readily understandable. Opening (Dkt. #87) at 7. Plaintiff concludes that no construction is necessary. Id. Alternatively, Plaintiff submits that whereas its proposed construction is consistent with the claim language and the specification, Defendants' proposal errs by "requir[ing] that an `interface' be selected, instead of the `output' of the interface." Id. at 8.
Defendants respond that construction is necessary to clarify that the "output" terms refer to data. Response (Dkt. #91) at 5-6. Defendants also argue that Plaintiff's proposal fails to give meaning to the phrase "an output of the data interface circuit." Id. at 7. Defendants also urge that "the specification makes clear that the only selection that occurs is the selection of which interface (single-ended or differential) is used to output the data from the data interface circuit." Id.
Plaintiff replies that Defendants' proposal "is based on a preferred embodiment of the patent appearing in Figure 5," which should not be limiting. Reply (Dkt. #96) at 3. Plaintiff also argues that its proposed construction "fully captures the limitation `output of the data interface circuit' by providing that one of the two claimed outputs can be chosen." Id. at 4.
In sur-reply, Defendants argue that Plaintiff improperly reads the word "output" out of context. Sur-Reply (Dkt. #98) at 1. Defendants submit that "[Plaintiff] does not address [Defendants'] showing that the only way to get a single-ended interface output is to select the single-ended interface and the only way to get a differential output is to select the differential interface." Id. at 2.
The specification discloses:
'290 Patent at 3:65-4:13 (emphasis added).
Because the disputed term itself (as well as the specification, as quoted above) refers to selecting an output, the Court hereby expressly rejects Defendants' proposal of referring to selection of an interface. Finally, the parties appear to agree that the constituent term "output" refers to data rather than to, for example, a connector pin or a wire, so no clarification is necessary in that regard.
No further construction is necessary. See U.S. Surgical, 103 F.3d at 1568 ("Claim construction is a matter of resolution of disputed meanings and technical scope, to clarify and when necessary to explain what the patentee covered by the claims, for use in the determination of infringement. It is not an obligatory exercise in redundancy."); see also O2 Micro, 521 F.3d at 1362 ("[D]istrict courts are not (and should not be) required to construe every limitation present in a patent's asserted claims."); Finjan, Inc. v. Secure Computing Corp., 626 F.3d 1197, 1207 (Fed. Cir. 2010) ("Unlike O2 Micro, where the court failed to resolve the parties' quarrel, the district court rejected Defendants' construction.").
The Court therefore hereby construes
Opening (Dkt. #87) at 9; Response (Dkt. #91) at 8. The parties submit that this term appears in Claim 10. See Prehearing Statement (Dkt. #86), Ex. B at 1.
Plaintiff argues that no construction is necessary because "[t]he plain language of the claims states that `sensor' refers to the CMOS image sensor recited by the claim," and "[t]here also can be no reasonable dispute that the words `having,' `data,' `interface,' and `circuit' are readily understood words that require no special construction." Opening (Dkt. #87) at 8. Plaintiff urges that "[t]he intrinsic record . . . does not contain an express definition or a disclaimer that would limit the claims" so as to require a sensor that communicates "image data," as Defendants have proposed. Id. at 8-9.
Defendants respond that "[t]he express language of the claim (and common sense) establishes that the data being communicated from the `CMOS image sensor' to the `image processor' must be image data." Response (Dkt. #91) at 8. "Notably," Defendants submit, "the '290 patent does not disclose or suggest any other type of data being communicated to the image processor through the data interface circuit." Id. at 9.
Plaintiff replies that "[o]nce again . . . [Defendants] rel[y] on exemplary embodiments" in the absence of any "words of manifest exclusion or restriction." Reply (Dkt. #96) at 5. Plaintiff also argues that "[t]he claims state that `signals'—not `image data'—are communicated. Similarly, the specification provides that an image processor receives `signals' output by a data interface circuit, without limiting those signals to any particular type of signal or data." Id. at 5-6. Plaintiff explains that "the patent does not prevent the image sensor and image processor from communicating information other than image data . . . ." Id. at 6.
In sur-reply, Defendants argue that it is well-established that a claim can be drafted to cover only a particular disclosed embodiment. Sur-Reply (Dkt. #98) at 2. Defendants submit that "[t]he applicants chose to draft Claim 10 narrowly to cover only an `imaging apparatus' and a data interface that connects an imaging sensor to a[n] imaging processor." Id. at 3. Defendants conclude that "the[ ] signals that are output from the data interface circuit are image data." Id. At the June 10, 2015 hearing, Defendants confirmed that their position is that the data interface circuit communicates only image data.
Claim 10 of the '290 Patent recites (emphasis added):
The Description of Related Art states:
'290 Patent at 1:16-35 & 2:14-37 (emphasis added); see id. at Fig. 4; see also id. at 3:22-37 ("The present invention is a data interface for CMOS imagers that can be either a single-ended interface or a differential interface.") (emphasis added); id. at 3:60-4:21.
Also, a parent patent application refers to image data communicated from a CMOS sensor to an image processor. See Response (Dkt. #91), Ex. D, United States Patent Application No. 09/062,343 at 2 ("It is still another object of the invention to provide for faster, more efficient pixel data transmission in CMOS imaging apparatus.") (emphasis added); see also id. at 3 & 7.
Defendants have cited authority holding that "[t]he claims of the patent must be read in light of the specification's consistent emphasis on [a] fundamental feature of the invention." Praxair, Inc. v. ATMI, Inc., 543 F.3d 1306, 1324 (Fed. Cir. 2008).
On balance, however, none of the evidence cited by Defendants demonstrates that the data interface circuit is limited to communicating only image data. Also of note, above-quoted Claim 10 recites (emphasis added): "an image processor connected to the CMOS image sensor to receive the signals output by the data interface circuit." The Court therefore hereby expressly rejects Defendants' argument that the data interface circuit must communicate only image data.
Nonetheless, the above-discussed evidence cited by Defendants adequately demonstrates that the "data interface circuit" must at least communicate image data signals. At the June 10, 2015 hearing, Plaintiff acknowledged that image data must be at least part of what the data interface circuit communicates.
The Court accordingly hereby construes
Opening (Dkt. #87) at 10; Response (Dkt. #91) at 10. The parties submit that this term appears in Claim 10. See Prehearing Statement (Dkt. #86), Ex. B at 3.
Plaintiff argues that "there can be no reasonable dispute that the words making up the phrase are readily understandable and thus require no special construction." Opening (Dkt. #87) at 9. Plaintiff urges that "[t]he intrinsic record . . . does not contain an express definition or a disclaimer that would limit the claims" so as to limit the "image processor" to being a "digital signal processor," as Defendants have proposed. Id.
Defendants respond that "the claim language establishes that the image processor must be a hardware component" and "image processors, by definition, must process image data." Response (Dkt. #91) at 11.
Plaintiff's reply and Defendants' sur-reply address this term together with the term "the sensor having a data interface circuit," which is discussed above. See Reply (Dkt. #96) at 4-6; Sur-Reply (Dkt. #98) at 2-3.
At the June 10, 2015 hearing, Defendants emphasized that unlike Claim 1, Claim 10 specifically recites a CMOS image sensor. Defendants reiterated that an "image processor" must be a specialized processor for processing image data.
The Background of the Invention refers to an "image processor chip 52" that "includes a data processor 53 which performs various manipulations of the image data such as compression and color processing. The processor 53 may be software driven or a hardware embodiment." '290 Patent at 2:14-26; see id. at 1:16-34 ("CMOS imagers often have integrated analog to digital converters to convert the analog signal to a digital bit stream that can be processed by the companion chip. The digitized information then must be transferred to companion chip or other external devices for picture storage, processing, or transmission.").
As to extrinsic evidence, Defendants have cited dictionaries that define "image processing" as meaning "Techniques for filtering, storing and retrieving images" (Response (Dkt. #91), Ex. E, Larousse Dictionary of Science and Technology 556 (1995)) and "The manipulation of images by computer" (id., Ex. I, The New IEEE Standard Dictionary of Electrical and Electronics Terms 618 (5th ed. 1993)).
For substantially the same reasons set forth above as to the term "the sensor having a data interface circuit," the Court concludes that although an "image processor" might perhaps process signals in addition to image data signals, an "image processor" must at least process image data signals. But to whatever extent Defendants maintain that an "image processor" must be a distinct hardware component, the Court hereby expressly rejects any such interpretation. Nonetheless, at the June 10, 2015 hearing, the parties confirmed their mutual understanding that even in a software implementation, there must be some underlying hardware. Finally, to whatever extent Defendants are arguing that the "image processor" limitation cannot be met by an appropriately configured general-purpose processor, the Court hereby expressly rejects any such argument as lacking adequate support.
The Court therefore hereby construes
The '029 Patent, titled "Strobe Lighting System for Digital Images," issued on August 15, 2006, and bears an earliest priority date of March 24, 2000. Plaintiff submits:
Opening (Dkt. #87) at 3-4. The Abstract of the '029 Patent states:
Opening (Dkt. #87) at 12; Response (Dkt. #91) at 12. The parties submit that this term appears in Claims 1, 7, and 14. See Prehearing Statement (Dkt. #86), Ex. C at 1.
Plaintiff argues that no construction is necessary because this term is "comprised of nontechnical terms whose meanings are readily apparent." Opening (Dkt. #87) at 10. Plaintiff submits that Defendants' proposal of the word "set" implies a fixed duration, which Plaintiff argues is an unwarranted limitation. Id. at 11-12.
Defendants respond that "the patent makes clear that the preparatory light is from a strobe." Response (Dkt. #91) at 13. Defendants also urge that, "as [Plaintiff] implicitly concedes in its Brief, the `preparatory light' during the `preparatory duration' is emitted as a preliminary step (as [Defendants'] construction requires), before determination of the supplemental strobe duration and the firing of the main flash." Id. at 13-14 (citing Opening (Dkt. #87) at 11-12).
Plaintiff replies that neither the intrinsic evidence nor Defendants' extrinsic dictionary definition supports interpreting "predetermined" to mean "set" or "fixed." Reply (Dkt. #96) at 7.
In sur-reply, Defendants highlight that the title of the '029 Patent refers to a "strobe," and Defendants note that Plaintiff in its briefing has described the preparatory light as a strobe. Sur-Reply (Dkt. #98) at 3. Defendants also argue that Plaintiff has not explained how the recited duration could be adjustable. Id. at 4.
Claim 1 of the '029 Patent is representative and recites (emphasis added):
The parties agree that a duration during which preparatory light is emitted is determined before emission of such light. See Response (Dkt. #91) at 14; see also '029 Patent at 9:54-10:3; id. at 7:5-9 ("In step 332 the activate strobe procedure 224 acquires a preparatory image while generating preparatory light. To generate the preparatory light, the strobe is activated for a predetermined period of time, such as fifty microseconds.") (emphasis added).
Finally, Defendants have not adequately demonstrated that the "preparatory light" must be generated by a "strobe." The Abstract of the '029 Patent refers to a "preparatory image that is lighted . . . by a strobe." In some cases, statements in an Abstract can lend support to a construction. See Netcraft Corp. v. eBay, Inc., 549 F.3d 1394, 1398-99 (Fed. Cir. 2008). On balance, however, use of a "strobe" is a feature of particular embodiments that should not be imported into the claims. See '029 Patent at 7:57-60 ("In step 354, the activate strobe procedure 224 generates preparatory light by activating the strobe for a predetermined preparatory duration."); see also Constant, 848 F.2d at 1571; Phillips, 415 F.3d at 1323.
At the June 10, 2015 hearing, Defendants noted that Claim 1 itself recites a "supplemental strobe." If anything, however, this recital of a strobe in Claim 1 suggests that the term "preparatory light" can mean something other than a "strobe." See, e.g., CAE Screenplates, Inc. v. Heinrich Fiedler GmbH & Co. KG, 224 F.3d 1308, 1317 (Fed. Cir. 2000) ("we must presume that the use of . . . different terms in the claims connotes different meanings").
The Court therefore hereby construes
Opening (Dkt. #87) at 14; Response (Dkt. #91) at 14. The parties submit that this term appears in Claims 1, 7, and 14. See Prehearing Statement (Dkt. #86), Ex. C at 2.
Plaintiff argues that whereas its proposal comports with the rule that "a" means "one or more," Defendants' proposal improperly limits the disputed term to a single image. Opening (Dkt. #87) at 13. Plaintiff also submits that "[t]he claims and the specification state over and over again that a preparatory image is captured, or `acquired,' through the use of a preparatory light." Id. at 14.
Defendants respond that Plaintiff's proposed construction "adds unnecessary redundancy (`acquired using preparatory light') and superfluous content (`one or more') to a term that is understandable to one of skill in the art." Response (Dkt. #91) at 15.
Plaintiff replies by reiterating that Defendants have not justified departing from the usual rule that "a" means "one or more." Reply (Dkt. #96) at 8.
In sur-reply, Defendants argue that the disclosure regarding capturing multiple images for calibration purposes is not relevant to capturing a preparatory image. Sur-Reply (Dkt. #98) at 4. Defendants urge that "[Plaintiff] is attempting to use intrinsic evidence regarding a different procedure pertaining to different limitations in unasserted claims to unnecessarily construe a term with clear meaning." Id. at 5.
Claim 1 of the '029 Patent is representative and is quoted in the discussion of the term "preparatory light for a predetermined preparatory duration," above.
The indefinite article "`[a]' or `an' in patent parlance carries the meaning of `one or more' in open-ended claims containing the transitional phrase `comprising.'" Free Motion Fitness, Inc. v. Cybex Int'l, Inc., 423 F.3d 1343, 1350 (Fed. Cir. 2005) ("Cybex argues that here the presumption is overcome because the specification describes the cable as a `single cable.' We disagree. The references to a single cable in the specification are found in the description of the preferred embodiments, and do not evince a clear intent by the patentee to limit the article to the singular."); accord Baldwin Graphic Sys., Inc. v. Siebert, Inc., 512 F.3d 1338, 1342 (Fed. Cir. 2008) ("That `a' or `an' can mean `one or more' is best described as a rule, rather than merely as a presumption or even a convention. The exceptions to this rule are extremely limited: a patentee must `evince[ ] a clear intent' to limit `a' or `an' to `one.'") (citation omitted).
Defendants have not shown that the patentee limited "a" so as to mean only "one." To whatever extent Defendants maintain that the claims at issue are limited to using one and only one preparatory image, the Court hereby expressly rejects any such argument as lacking adequate support. In particular, such a feature should not be imported from the disclosed embodiments. See Constant, 848 F.2d at 1571; see also Phillips, 415 F.3d at 1323. To whatever extent Defendants are arguing that the specification does not explain how to make use of more than one preparatory image, such an argument perhaps might pertain to enablement but is not relevant to these claim construction proceedings. See Phillips, 415 F.3d at 1327 ("[W]e have certainly not endorsed a regime in which validity analysis is a regular component of claim construction.").
Because no other substantive disputes are apparent, no further construction is necessary. See U.S. Surgical, 103 F.3d at 1568; see also O2 Micro, 521 F.3d at 1362; Finjan, 626 F.3d at 1207.
The Court accordingly hereby construes
Opening (Dkt. #87) at 15; Response (Dkt. #91) at 16; Prehearing Statement (Dkt. #86), Ex. C at 2. The parties submit that this term appears in Claim 6. See id.
Plaintiff argues that "[a] person skilled in the art would recognize that the `average image luminance' in claim 6 refers back to the `average preparatory image luminance' recited in claim 1." Opening (Dkt. #87) at 14-15.
Defendants respond that "the term `average image luminance' is open to multiple interpretations, and thus there can be no implicit antecedent basis providing the requisite `reasonable certainty.'" Response (Dkt. #91) at 16. Defendants explain that "a person of ordinary skill in the art could interpret `average image luminance' in claim 6 to mean any of: (1) the `average calibration luminance;' (2) the `average nominal luminance;' (3) the `target luminance' average; or (4) the `weighted image average luminance,' because accessing the lookup table is based, in part, on each of these distinct `average' values." Id. at 18 (citing '029 Patent at 9:12-25, 10:15-18 & 10:60-67).
Plaintiff replies by reiterating that "`average image luminance' has an implied antecedent basis." Reply (Dkt. #96) at 9. Plaintiff also submits that whereas the specification discloses measuring luminance characteristics of preparatory images, no such measuring occurs for final images. Id. at 9-10.
In sur-reply, Defendants argue that "as the specification makes clear, each of the four types of average image luminances identified by [Defendants] correspond to different `images': `average calibration luminance' to images taken during power value calibration; `average nominal luminance' to images taken during preparatory power value calibration; `target luminance average' to final photographic images; and `weighted image average luminance' to preparatory images." Sur-Reply (Dkt. #98) at 5 (footnote omitted). Defendants urge that "given the multiple contexts in which the look-up table is accessed, a person of ordinary skill could not know with reasonable certainty which of these four identified average image luminances is the basis for any one type of access." Id. at 5-6.
At the June 10, 2015 hearing, Plaintiff cited a recent Apple Inc. v. Samsung Electronics Co., Ltd. decision in which the Court of Appeals for the Federal Circuit rejected an indefiniteness argument as lacking supporting evidence. ___ F.3d ____, 2015 WL 2343543, at *14 (Fed. Cir. May 18, 2015). In response, Defendants reiterated their arguments and also argued that Plaintiff's interpretation must be incorrect because the "average image luminance" recited in dependent Claim 8 is not necessarily the "average preparatory image luminance."
The disputed term appears in Claim 6, which depends from Claim 1. Claims 1 and 6 of the '029 Patent recite (emphasis added):
Defendants argue that "[Plaintiff's] argument conflates `average image luminance' and `average preparatory image luminance.' These are generally two separate (though overlapping) concepts, as their plain language makes clear — `average image luminance' relates to the luminance of the image and `average preparatory image luminance' relates to the luminance of the preparatory image." Response (Dkt. #91) at 17. On one hand, "[w]hen different words or phrases are used in separate claims, a difference in meaning is presumed." Nystrom v. TREX Co., Inc., 424 F.3d 1136, 1143 (Fed. Cir. 2005).
On the other hand, as reproduced above, the only type of image luminance recited in the body of Claim 1 is preparatory image luminance. On balance, a person of ordinary skill in the art would understand that "the average image luminance" in dependent Claim 6 has antecedent basis in the "average preparatory image luminance" recited in independent Claim 1. See Energizer Holdings Inc. v. Int'l Trade Comm'n, 435 F.3d 1366, 1371 (Fed. Cir. 2006) (holding that "an anode gel comprised of zinc as the active anode component" provided implicit antecedent basis for "said zinc anode"); see also Ex Parte Porter, 25 U.S.P.Q.2d 1144, 1145 (B.P.A.I. 1992) ("The term `the controlled fluid' . . . finds reasonable antecedent basis in the previously recited `controlled stream of fluid . . . .'"). Defendants' above-noted argument as to Claim 8 is unpersuasive at least because here the parties' dispute pertains specifically to antecedent basis as to Claims 1 and 6.
The Court therefore hereby construes
Opening (Dkt. #87) at 16; Response (Dkt. #91) at 19; Prehearing Statement (Dkt. #86), Ex. C at 2. The parties submit that this term appears in Claim 16. See id.
At the June 10, 2015 hearing, the parties submitted that they have reached agreement that this term should be construed to have its plain and ordinary meaning. Defendants are no longer arguing indefiniteness as to this term.
The Court accordingly hereby construes
Opening (Dkt. #87) at 18; Response (Dkt. #91) at 20. The parties submit that these terms appear in Claims 1, 7, and 14. See Prehearing Statement (Dkt. #86), Ex. C at 2-3.
Plaintiff argued that "[t]he claims are not limited to any particular method of generating a supplemental strobe duration. A person of ordinary skill in the art would . . . understand that any method of generating a supplemental strobe duration would suffice." Opening (Dkt. #87) at 16. Further, Plaintiff argued, "neither the language of the claims or the specification requires that only a single preparatory image can be used, or that multiple preparatory images cannot be used." Id. at 17.
Defendants responded that "[t]he multiple plausible (but very different) meanings for these terms fail the `reasonable certainty' test for indefiniteness. . . . For example, it could mean either determining the duration of the supplemental strobe or actually activating the strobe." Response (Dkt. #91) at 21 (footnotes omitted). Defendants also urged that, during prosecution, "the applicants clearly disavowed using more than a single preparatory image to generate the supplemental strobe duration." Id. at 22. Defendants also emphasized that "[t]he patent makes no mention of a first and second preparatory image." Id. at 23.
Plaintiff replied that "[t]he term states that a `duration' is generated, not that a `strobe' is generated or `activated.' . . . When the specification discusses activation of the strobe, the specification explicitly uses the word `activating.'" Reply (Dkt. #96) at 12. As to the prosecution history, Plaintiff replied that "[t]he prosecution statements on which [Defendants] rel[y] were made with respect to different claims, not the claims that issued in the '029 patent," and "[t]he examiner ultimately allowed the claims without the limitation of a `single' preparatory image." Id. at 13-14.
In sur-reply, Defendants submit: "While [Defendants] believe[ ] that these terms are indefinite and that, if the terms are construed, [Defendants'] construction is technically more accurate, to narrow the issues for the Court, [Defendant] will agree to [Plaintiff's] proposed `plain and ordinary meaning' reading." Sur-Reply (Dkt. #98) at 6.
Thus, as now agreed upon by the parties, the Court hereby construes
The '884 Patent, titled "Image Flicker Reduction With Fluorescent Lighting," issued on August 7, 2001, and bears a filing date of September 28, 1999.
Recorded video can flicker (or contain bands of light) because the light gathered to create each frame (or certain portions of a frame) may be gathered during different parts of the flicker cycle of the fluorescent lighting. One way to avoid flicker is to set the integration time of the sensor equal to a so-called "integral multiple" of the period of the flicker. For example, in a 50 Hz electrical system, each period of the flicker cycle lasts 10 milliseconds (ms). If the integration time is set to 10 ms, then regardless of timing the sensor will in total capture one full 10 ms flicker cycle of light. Similarly, setting the integration time to 20 ms means that the sensor captures two full flicker cycles, and so on.
The '884 Patent refers to such multiples of the integration time as "integral multiples." Figure 3A is illustrative, and the associated description in the specification explains that "the amount of light captured is independent of where in the cycle of the light output 202 the integration begins." '884 Patent at 4:38-40. Figure 3A is reproduced here:
The '884 Patent further discloses that gain can be adjusted to account for the change in integration time that was necessary to avoid flicker. Id. at 5:49-6:9.
The Abstract of the '884 Patent states:
The parties have agreed that, in the '884 Patent, "integration time" means "the amount of time that a pixel is allowed to gather light before that pixel is read," and "overall system gain" means "the ratio of the output signal of the entire system to the input signal to entire system." Prehearing Statement (Dkt. #86) at 2.
Opening (Dkt. #87) at 19; Response (Dkt. #91) at 25. The parties submit that this term appears in Claim 1. See Prehearing Statement (Dkt. #86), Ex. A at 1.
In Imperium I, the Court initially construed this disputed term to mean "adjusting the overall system gain by the determined amount by adjusting the integration time." Imperium I, Dkt. #209 at 15. After further proceedings, the Court construed this disputed term to mean "adjusting the overall system gain by an amount as close to the determined amount as can be accomplished by adjusting the integration time." See id., Dkt. #401 at 3-5.
Plaintiff argues that, "[a]s the Court explained in [Imperium I], the specification provides that overall system gain may be adjusted by the determined amount through a combination of `coarse' adjustments—such as adjusting integration time—and `fine' adjustments—such as amplification and digital gamma correction." Opening (Dkt. #87) at 18.
Defendants respond that Plaintiff's proposed construction "is inconsistent with the intrinsic evidence and is irreconcilable with the plain language of the claims." Response (Dkt. #91) at 25. Defendants argue that "[i]ncluding `the determined amount' as part of the construction is necessary to provide context for (and to provide consistency with) the `determining' step recited earlier in the claim." Id. at 26. Further, Defendants submit, "Claim 1 is not directed to amplification or digital gamma correction," "[a]nd there is nothing in the plain words of Claim 1 about fractional adjustments." Id. at 27.
Plaintiff replies that "[b]ecause the integration time can only be adjusted in `coarse' steps (e.g., 10 ms, 20 ms, 30 ms), the Court properly determined that it may be impossible to adjust the overall system gain `by the determined amount' by only adjusting the integration time." Reply (Dkt. #96) at 15. Plaintiff submits that its proposed construction "therefore accounts for the fact that," in some situations, "the integration time can be used to adjust the overall system gain by a fraction of the determined amount" and "other parameters (e.g., amplification and digital gamma correction) can be used to make `fine' adjustments to the overall system gain, so as to adjust the overall system gain by the remaining amount." Id. at 15-16.
In sur-reply, Defendants argue that whereas their proposal "tracks the exact language of the `adjusting' method step and properly makes reference to the preceding step with respect to the determined amount of adjustment," Plaintiff's argument is "a thinly-disguised doctrine of equivalents argument." Sur-Reply (Dkt. #98) at 7.
Claim 1 of the '884 Patent recites (emphasis added):
In Imperium I, the Court found:
Imperium I, Dkt. #401 at 3-4; see '884 Patent at 5:52-57 ("In the disclosed embodiment, brightness is adjusted most coarsely by setting the integration time via the registers 312. Using a 30 Hz (or any other) frame rate with 50 Hz lighting, the integration times can be set to approximately 10 milliseconds, 20 milliseconds, or 30 milliseconds as illustrated in FIG. 3a. This provides three levels of intensity control . . . .").
Plaintiff argues that its proposal is consistent with the Imperium I findings. Opening (Dkt. #87) at 18. Defendants argue that Plaintiff's proposal "could potentially cover circumstances where even a miniscule fraction of the determined amount of adjustment is accomplished by varying the integration time. That is inconsistent with the [Imperium I] construction and [Plaintiff's] own argument that `coarse' adjustments are accomplished by varying the integration time and `fine' adjustments are accomplished in other ways." Response (Dkt. #91) at 28.
On balance, neither side has justified departing from the Imperium I construction or demonstrated that the parties have a substantive dispute requiring any additional construction. See Imperium I, Dkt. #401 at 3-4 (quoted above); see also Maurice Mitchell Innovations, 2006 WL 1751779, at *4; TQP Development, LLC v. Inuit Inc., No. 2:12-CV-180, 2014 WL 2810016, at *6 (E.D. Tex. June 20, 2014) (Bryson, J.) ("[P]revious claim constructions in cases involving the same patent are entitled to substantial weight, and the Court has determined that it will not depart from those constructions absent a strong reason for doing so.").
Instead, Defendants' concerns are adequately addressed by Plaintiff's acknowledgement in its reply brief that adjusting integration time is a relatively coarse adjustment and adjusting amplification and gamma correction are relatively fine adjustments. See Reply (Dkt. #96) at 15-16 ("the integration time can only be adjusted in `coarse' steps"; "other parameters (e.g., amplification and digital gamma correction) can be used to make `fine' adjustments").
The Court therefore hereby construes
Opening (Dkt. #87) at 20; Response (Dkt. #91) at 29.
In Imperium I, the Court found that the preambles of Claims 1 and 14 are not limiting. See Imperium I, Dkt. #209 at 6-8.
Plaintiff argues that "[a]s the Court explained in Imperium I, the terms in the preambles recite the purpose of the invention, but are not essential to understanding the meaning of the claims." Opening (Dkt. #87) at 20 (italics added).
Defendants respond that "a substantial amount of the preamble language provides antecedent basis for several later-recited limitations (for example, the preamble phrases `lighting,' `periodic intensity' and `integration time' provide such antecedent basis)." Response (Dkt. #91) at 29.
Plaintiff replies that "[t]he fact that the preamble provides antecedent basis for a term, alone, does not make the preamble limiting." Reply (Dkt. #96) at 16. Here, Plaintiff argues, "the [claim] bodies indisputably set out a complete invention." Id. at 17.
In sur-reply, Defendants reiterate that "[Plaintiff] should not be permitted . . . to expand the scope of its infringement allegations by ignoring the unambiguous preamble language that provides . . . antecedent basis." Sur-Reply (Dkt. #98) at 7.
Catalina Mktg. Int'l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002) (citation and internal quotation marks omitted).
Claims 1 and 14 of the '884 Patent recite (emphasis added):
On one hand, "[w]hen limitations in the body of the claim rely upon and derive antecedent basis from the preamble, then the preamble may act as a necessary component of the claimed invention." Eaton Corp. v. Rockwell Int'l Corp., 323 F.3d 1332, 1339 (Fed. Cir. 2003).
On the other hand, in Imperium I the Court found the preambles not limiting because "the `reducing flicker' purpose is not `necessary to give life, meaning, and vitality' to the claims because `the periodic intensity of the lighting' is adequately addressed in the body of the claims." Imperium I, Dkt. #209 at 8 (citing Catalina Mktg., 289 F.3d at 808); see Symantec Corp. v. Computer Assocs. Int'l, Inc., 522 F.3d 1279, 1288-89 (Fed. Cir. 2008) ("[I]n general, the purpose of a claim preamble is to give context for what is being described in the body of the claim; if it is reasonably susceptible to being construed to be merely duplicative of the limitations in the body of the claim (and was not clearly added to overcome a rejection), we do not construe it to be a separate limitation.").
On balance, Defendants have not adequately justified departing from the conclusion reached in Imperium I. The Court therefore hereby expressly rejects Defendants' proposal that the preambles are limiting.
Plaintiff submits that the parties have reached agreement that this term, which the parties submit appears in Claim 17, should be given its plain and ordinary meaning. Opening (Dkt. #87) at 20; see Prehearing Statement (Dkt. #86), Ex. B at 4.
Defendants respond that although "the term does not require construction at this point in the proceedings, `gamma correction' is an issue that will need to be addressed at trial through expert testimony." Response (Dkt. #91) at 30. Defendants identify an extrinsic dictionary definition of "gamma correction" as meaning "[t]he insertion of a nonlinear output-input characteristic for the purpose of changing the system transfer characteristic." Id. (citing id., Ex. I, The New IEEE Standard Dictionary of Electrical and Electronics Terms 547 (1993)).
Plaintiff replies that "[t]he intrinsic record does not contain an express definition or a disclaimer that would limit the claims in such a manner . . . ." Reply (Dkt. #96) at 18. "Here," Plaintiff argues, "the specification does not reduce gamma correction to any particular type of gamma correction, much less the specific mathematical concept proposed by [Defendants]." Id.
In sur-reply, Defendants submit that reference to extrinsic evidence is appropriate because "the phrase `gamma correction' has no meaning to a lay juror" and "[t]he meaning of `gamma correction' is not evident from the intrinsic evidence." Sur-Reply (Dkt. #98) at 8. Defendants conclude:
Id.
Also of note, "gamma correction" is not presented as a disputed term in the parties' May 27, 2015 Joint Claim Construction Chart Pursuant to P.R. 4-5(d) (Dkt. #99).
On balance, the parties' dispute appears to amount to whether particular features of accused instrumentalities are "gamma correction" according to the plain meaning of that term to a person of ordinary skill in the art. See PPG Indus. v. Guardian Indus. Corp., 156 F.3d 1351, 1355 (Fed. Cir. 1998) ("[A]fter the court has defined the claim with whatever specificity and precision is warranted by the language of the claim and the evidence bearing on the proper construction, the task of determining whether the construed claim reads on the accused product is for the finder of fact."); see also U.S. Surgical, 103 F.3d at 1568; O2 Micro, 521 F.3d at 1362.
The Court accordingly hereby construes
The Court adopts the constructions set forth in this opinion for the disputed terms of the patents-in-suit. The parties are ordered that they may not refer, directly or indirectly, to each other's claim construction positions in the presence of the jury. Likewise, the parties are ordered to refrain from mentioning any portion of this opinion, other than the actual definitions adopted by the Court, in the presence of the jury. Any reference to claim construction proceedings is limited to informing the jury of the definitions adopted by the Court.
